Defendant’s Decision to Pursue IPR Bars Pursuit of § 285 Attorney Fees Award

Following inter partes review, the court granted plaintiff's motion to dismiss its patent infringement action and defendant's invalidity and noninfringement counterclaims as moot and rejected defendant's request to allow 90 days of discovery to support its 35 U.S.C. § 285 claim. "Once the [patent] was determined to be unpatentable, the need for a declaratory judgement of invalidity and non-infringement became a moot issue. . . . If the Defendant had desired to conduct discovery to prove the egregious conduct alleged in their response to the Order to Show Cause, they should not have joined in the IPR, nor should they have filed a separate petition for IPR of all claims of the [patent] on the same grounds described in the then-pending IPR. Having chosen to invalidate the [patent] before the USPTO, they cannot now complain that they are denied the ability to avail themselves of this federal forum."

MD Security Solutions LLC v. Protection 1, Inc., 6-15-cv-01968 (FLMD September 26, 2017, Order) (Byron, USDJ)